DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Application
The preliminary amendment dated 4/9/2024 has been received and will be entered.
Claim(s) 1-14 is/are pending.
Claim(s) 1, 3, 4, 5, 6, 8, 9, 10, 12, 13 is/are currently amended.
Claim(s) 14 is/are new.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/9/2024 is in compliance with the provisions of 37 CFR 1.97-1.98, except as noted below:
Non-Patent Literature Document Cite No. 1 was not provided. At best, some author’s manuscript was provided. Note the bottom of the page states:
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The item is crossed-off and is not considered.
Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
I. Claims 1-14 – or as stated below – is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3-5 recites “comprising or consisting of.” It is unclear what is excluded by this unconventional transitional language. See MPEP 2111.03 (discussing preambles).
Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 12, and 13 state “preferably…” in several instances. This is exemplary language. MPEP 2173.05(d) states “[d]escription of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim.”
Any other instance of “preferably,” in any claim, inadvertently overlooked is similarly rejected.
Dependent claims not specifically addressed import the issues of the claims from which they depend.
Allowable Subject Matter
No claims are allowed; see Claim Rejections – 35 U.S.C. 112, supra. Pending resolution of the issues above, Claims 1-14 would be allowable.
The International Searching Authority cited CN 103880699 to Li (04-10-2014; C07C 233/92). The Applicant did not submit a translation. The EPO machine translation did not reproduce the chemical formulae. Citation to the original Chinese document will be denoted (Li CN page, paragraph), while citation to the machine translation will be denoted (Li at page). Li teaches the structure that reads on formula (I) of Claim 1. (Li CN 4: [0016] – Formula III). The R1, R2 and R3 groups are taught. (Li at 3). Li does teach an aromatic hydrocarbon – specifically toluene. (Li at 4). As understood, toluene is a reagent used to synthesize Formula III. See (Li at 4: “In the synthesis method of the present invention, the molar volume ratio of the compound of the formula (I) to toluene is 1:5-8 mol/L…”) and (Li at 5, Example 1: “1 mol of the compound of the formula (I) and 0.06 mol of FeCl 2 were added to the reaction vessel, stirred and passed through a nitrogen atmosphere to maintain a nitrogen atmosphere, then 6 L of solvent toluene was added to the system … The residue was purified by silica gel column chromatography to give the compound of formula (III).” Theoretically, Formula III could exist in equilibrium with toluene in the process of Li, but Li did not teach or reasonably suggest the relative quantities of Formula (I) and the aromatic required by Claim 1.
Garduno-Castro, et al., Application of acylic chiral auxiliaries on alkylation reactions, Tetrahedron Letters 2014; 55: 193-196 (hereinafter “G-C at __”). G-C teaches a number of imide compounds. See e.g. (G-C at 193, Fig. 2; 194, Table 1; passim). As understood, G-C does not teach or reasonably suggest the relative quantities of Formula (I) and the aromatic required by Claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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